A trade mark dispute to follow with Glee

Finding a trade mark you can use without invading someone else's comfort zone is increasingly difficult. It is one of the side-effects of globalisation: a multi-national player has the name registered everywhere you can think of, and probably has an extensive comfort zone so is inclined to take a dim view of a newcomer whose business, or sign, or both, is by anyone else's standards very different from what the trade mark protects. I've had several such cases in the last few years, and it tells me that the trade mark system isn't just cluttered (per the Max Planck Institute) but well and truly broken. Often it resembles nothing more than a tax on businesses, especially small ones, who are obliged to register trade marks that (a) they don't want or objectively need to register or (b) shouldn't be within any sensible person's definition of distinctive signs anyway. As a tax, it is regressive, which of course makes it worse: small businesses pay a higher proportion of their income on silly trade mark applications than large ones. Because of the magical properties that all IP is generally thought to possess, it is rapidly developing into a protection racket.

It isn't always like that, though. Here is a refreshing story of the small business (a comedy club called the Glee Club - not the strongest of trade marks, but the established meaning in the US shouldn't affect its validity here) taking on a multinational juggernaut (Twentieth Century Fox), and with a strong chance of winning. A small business that, unlike many, had the foresight to register its trade mark a long time ago (though a glance at the UK register shows at least two Glee Club trade marks). The report describes an open-and-shut case of infringement, though a newspaper article isn't ever a very reliable source, and I'm looking forward to seeing this one going further. Damages perhaps for the false suggestion that the club is associated with News International?

Spotify and free access

Interesting piece in the Guardian, particularly topical in light of increasing copyright protection for sound recordings.

Dylan and copyright

The great man has always worked with images as well as with words, but it seems that he might not bring the same originality to his painting as he does to his writing. Michael Gray's Bob Dylan Encyclopedia blog today shows a photo by Dmitri Kessel (died 1995) and a painting from Dylan's "Asia" series. You won't even have to dig out the report of Bauman v Fussell [1978] RPC 485 to work out that this needs the copyright owner's permission - and if you go a little deeper into Mr Gray's blog you will find other examples, such as this photo by the Danish photographer, Jacob Aue Sobol (born 1976), and a painting visible in this group.


This, from a musician who stands to benefit now from the extension of copyright in his sound recordings! I hope he got permission ...

For copyright enthusiasts on Project Gutenberg

Het Auteursrecht by Henri Louis de Beaufort, nearly 500 pages in Dutch dating from 1909, available since yesterday. Six downloads so far - yes, including me, sad git that I am: but my Kindle is still the same size and weight, so why not?

Martin Kretschmer on copyright term extension

An excellent comment on the cost of extending the duration of record companies' rights.

Facebook at work: leading by example?

That excellent and generous source for all things relating to law, Pinsent Mason's Out-Law, tells us that according to a written answer given by employment minister Chris Grayling staff working for the Department for Work and Pensions in its JobCentre Plus offices (which might be what used to be called labour exchanges, or at any rate might be functionally equivalent to them) are given access to LinkedIn (surely essential for anyone involved in matching people with jobs, and I don't just mean matching themselves with jobs) and Twitter (less obviously useful) but not Facebook, which is barred. The minister did not say whether this was simply to stop them wasting time - but I would imagine that with the the economy the way it is, JobCentre Plus staff don't have much chance to waste time even if they wanted to.

Orphan works - IFRRO has its say

The Commission published its proposals on orphan works some time ago, and the International Federation of Reproduction Rights Organisations has now put in its observations which can be found here. No surprise that they advocate a solution based on licensing, and argue that conditions for use of orphan works need to be decided on by authors and publishers. They also invoke the principle of subsidiarity to support a call for Member States to be permitted to legislate for different solutions at the national level.

The Commission's page on the proposal is here.

More copyright for sound recordings: Does the Directive pass the Stackridge Test?

Well, longer, anyway. The Council has accepted the record industry's special pleading, led by Sir Cliff Richard after whom the law is already unofficially being named, and adopted the long-mooted directive to harmonise copyright protection for sound recordings at a higher level than the 50 years provided for previously. They did not go up to 95 years as the lobbyists had wanted - harmonising the term with the US, which would have ignored the lack of protection in that country for performers's rights - and kept it to 70 years. The Press Release on the Council's decision is here and it links to the new directive.

Should we be welcoming this development, or ruing it? In many ways it depends on where you stand, although one thing that has to be said (as the IPKat pointed out the other day) is that this legislation fails to pass the Hargreaves test of evidence-based policy-making. It's good for record companies, of course, but they don't attract a huge amount of sympathy these days. It doesn't make any direct difference to songwriters, because their copyright already lasts for 70 years PMA - although it's possible that records will remain available for longer under the new law, so they might earn more for their musical and literary works. What about the performers?

I have posted on this subject before. When the topic first came up, it seemed to be driven by the record industry trying to get extra protection for some valuable properties. They got the performers to lobby for their cause, of course, because the public would be more sympathetic to them than to the industry - producing that memorable full-page ad in the papers with 2,000 signatures, including those of two deceased performers. In working out where I stood on the proposal, I adopted the Stackridge Test: would the benefit accrue to the musicians whose pension funds could do with a little topping up, or would the record companies clean up?

The answer I got (thanks to Mike Tobin, and through him Peter Purnell of Angel Air Records) was that the terms of recording contracts provided for the rights in the recordings to pass to the artists when the record company decided to remove the disc from the catalogue. So the musicians whose work I enjoyed back in the seventies get the right to arrange for new editions of their work, like the Stackridge back-catalogue on Angel Air. The extra term can benefit them, not invariably the record companies. And their pensions get a boost. On that basis, I decided that this was an OK law: not great, but certainly not altogether bad - perhaps a bad law with redeeming features.

What we have now is an increase in the duration of protection to seventy years from release, with a proviso that if the phonogram is not being offered to the public the performer can terminate his or her rights in the fixation of the performance - using the rights performers have in their performances as levers to take over the copyright in the sound recordings, thus neatly overcoming the problem that those rights can't simply revert to the artists because they never owned them in the first place. So the directive satisfies the Stackridge Test up to this point.

Where it looks to me as if it will fall down is that there is no need any longer for a phonogram (which includes a recording made available in immaterial form) ever to be deleted from the catalogue. The record companies can, if they are so minded, ensure that copies are always available to the public. The "reversionary" rights might never come into play, and while Stackridge won't lose what they already have musicians who haven't already gained control over the copyright in their sound recordings might find the new law has little to offer them.

Or am I wrong?

The Right to Privacy

Writing as I was the other day about Project Gutenberg, I was particularly struck to see today that the seminal work on the subject, The Right to Privacy by Louis D. Brandeis and Samuel D. Warren, is now available. It'll be on my Kindle very shortly, now I have finished reading Tolstoy's The Kreutzer Sonata (my advice is don't bother).

US patent reform: or the universal story of intellectual property?

 Dennis Crouch's always-interesting Patently-O blog gives us this today, from Senator Maria Cantwell. In fact, all Dennis gives us is the quote, so I am cheekily reposting the whole thing, but as it was a quote in the first place there can't be any doubt that it is fair use (US) and fair dealing for reporting current events (UK). The Senator was talking - obviously - about the reform of patent law in the US:

This is not a patent reform bill. This is a big corporation patent give away that tramples on the rights of small inventors.

I don't propose to get into the controversy about this piece of legislation, other than to observe that it does smack of protectionism - but I am going to remember that turn of phrase, which seems to describe so much that goes on in the world[s] of intellectual property. I'm thinking of the move to a totally opposition-based trade mark system in the UK, and the increase in the term of protection for sound recordings, for two things.

Project Gutenberg founder Michael Hart

I was moved to learn that Michael Hart, who did humankind a gigantic service by creating Project Gutenberg (http://www.gutenberg.org), died a couple of days ago. Project Gutenberg - or PG: I share initials with it - was a boon to me even before I was given a Kindle for my last birthday: I read Tolstoy's Resurrection on my trusty (but no more) Psion Series 5MX, one small screen at a time, then when I got a BlackBerry I tried Ulysses - about 8 lines at a time, absolutely hopeless. Now I have it, and a selection of other classics, as well as some of my own writing that I might need to look at, important reading like the Max Planck Institute's report, and a friend's first novel, all immediately to hand.

I did once contribute a work to PG, obtaining a copy of Browning's complete poems from Oxford City Library and scanning Pheidippides - what did you expect? - then working through the OCR output to make it as it should be. PG - Mr Hart himself, I think - was unimpressed that I had provided them with only one poem. Well, I now have it as part of an e-book of Browning's shorter poems. And enough other classic stuff to last me for the rest of my life, I suspect. All copyright-free.

Smartphone patent wars

Proving just how difficult it can be to tell a troll apart from a practising patent-holder, the FT reports today that Google has come to the aid of major Android-user HTC in its struggles with Apple. How? By transferring some patents to the handset manufacturer to bolster its position in the Apple litigation. These are not patents that it picked up from Motorola in that well-publicised deal a little while ago, but some that it had already acquired - not obtained - from elsewhere. Not a tremendously edifying spectacle, but in a fight like that you have to use what weapons you can get your hands on to try to achieve something like parity with the other side.

Another instance, perhaps, of the intellectual property tail wagging the business dog.

Patent documents may be made available to the public

The Patents Act 1977 (Amendment) Regulations 2011 (SI No 2059) are, paradoxically, to do with copyright - but copyright in patent documentation, for which they carve out an exemption:

Regulation 2 inserts a new section 118A into the Act which contains an exception from copyright. This provides that copyright is not infringed in a copyright work when a document is copied or made available electronically to the public for the purpose of inspection in accordance with section 118 of the Act. The exception from the right to communicate the work to the public does not extend to broadcasting the work.

It seems perhaps a little late in the day to slip that in - under the provisions of the information society directive, which dates from 2001.

Domain names as property

They are in California (Kremen v Online Classifieds Inc (2003) 337 F 3rd 1024), and now also in Ontario, although the English courts have been more sceptical (notwithstanding that in OBG Ltd. v. Allan, [2008] 1 A.C. 1 (H.L.), Lord Hoffman for the majority observed at para. 101, “I have no difficulty with the proposition that a domain name may be intangible property, like a copyright or trademark”: that remark appears to be completely obiter). Does it matter? Yes, for one thing because I've seen many agreements in which domain names have been included in the definition of "intellectual property" and the agreement has gone on to give warranties about the intellectual property being owned by one party, and often dealing with the transfer of that class of assets. It's a bad idea to warrant that you own something that probably isn't property, and to promise to transfer something that can't be transferred.

In Tucows.Com Co. v. Lojas Renner S.A.,2011 ONCA 548, the Court of Appeal for Ontario held that a domain name was property and that it was situate in that province, which meant that the Ontario courts had jurisdiction in a trade mark infringment case involving it. Getting over the first hurdle involved the court cosidering cases from a number of jurisdictions along with the academic literature, which they concluded pointed to domain names being a new form of intangible property. It was probably a conclusion they had to reach along the way to the right decision on the case, but it doesn't strike me as entirely convincing - at a philosphical level property can be whatever you want it to be, and of course statute can make something property (as is the case, for example, with copyright and trade marks in this country). But a domain name remains an entry on someone else's database which registration can be re-registered in someone else's name according to the registrar's rules, but which doesn't otherwise look much like property to me.